Ask HN: Help 3rd Party Registering my Common Law Trademark

https://news.ycombinator.com/item?id=7580458

by supermatt • 12 years ago

1 3 12 years ago

news.ycombinator.com

I have been working as a freelance Web and Application developer for the past 6 years, operating under an unregistered mark. I live in the UK, but have had clients globally, including the EU and USA. I consider my services to be global in nature.

In the USA, a company in the same market sector has decided to rebrand themselves using my mark, and has decided to initiate trademark registration for it.

What are my options here? I am not a corporation, I am a sole freelancer clearing less than $50k a year before tax (I'm bootstrapping a startup and using my freelancing to support myself). I highly doubt I can afford to 'lawyer up'. Even the costs in filing an objection to the USPTO seem prohibitive, plus after reading through the site I still have no idea how to do it.

I want to continue operating and marketing my services under my mark. I don't see why someone with deeper pockets should be able to seize the rights to a name I have used for the past 6 years.

I have read articles on the net ranging from "Send them a C&D using this template!" to "Whatever happens DONT send them a C&D!!".

Any advice would be most appreciated.

jesusmichael2• 12 years ago

Wow... I couldn't have imagined a more difficult question to ask then global IP and trademark law.

So I'll try to help.

The first question is: Is the offending party in the same business as you?

The goal of the law in dealing with trademarks is: "Will it cause confusion in the marketplace?" and "Is one party trying to benefit from the goodwill of the other party?"

Those are the tests that a US court will apply to your case.

If they are in the same business as you are. I would send them a notification letter of your use of the mark. Not a Cease and Desist.

If you are in the UK you don't need to file a challenge to the USPTO, just a notice to the UK IP Office. Its the job of the petitioner at the USPTO to do a global search.

In the end you can keep operating up until they sue you. They'd have to sue you in a UK court, which may be cost prohibitive for them... and at which point you'll have the evidence to show your use of the mark for the last 6 years and your notice to them of your use of it.

Hope that helps...

supermatt• 12 years ago

Many thanks for your feedback! Its just what I was hoping to hear. I will ensure to send them a letter by registered mail tomorrow morning.

jesusmichael2• 12 years ago

Oh... one thing I should mention is that if the do attempt to bar you from using the mark in the future. Make an offer to sell them your rights to the mark before going to court. You have ample evidence of your use and they may have a tough going. Everything is evidence.. your website, business cards, your client list, etc. You might want to run a small ad in a publication that is delivered outside of the UK to give yourself international presence. Just a thought... I'm not a lawyer but I did go to law school and international IP was one of my favorite classes.